Appeal No. 96-3999 Page 8 Application No. 08/395,719 enter a rejection based on indefiniteness under 35 U.S.C. § 112, second paragraph. We recognize the inconsistency implicit in our holding that claim 1 is rejectable under 35 U.S.C. § 112, second paragraph, with a holding that claim 1 is anticipated under 35 U.S.C. § 102. Normally, when substantial confusion exists as to the interpretation of a claim and no reasonably definite meaning can be ascribed to the terms in a claim, a determination as to patentability over the prior art is not made. See In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). However, in this instance, we consider it to be desirable to avoid the inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). Accordingly, we interpret appellant's claim 1 according to the above-noted first interpretation. The inquiry as to whether a reference anticipates a claim must focus on what subject matter is encompassed by the claim and what subject matter is described by the reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on'Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007